The Examination Aftermath of Stanley Brothers Social

The TTAB decision in In re Stanley Brothers Social Enterprises, LLC, 2020 USPQ2d 10658 (TTAB 2020) decided three cannabis-related points of law. First, CBD in food products is outside the scope of the Farm Bill’s permissions; second, that dietary or nutritional supplements were “food” regulated under the Federal Food, Drug and Cosmetic Act (FDCA) and thus the CBD-containing products were unlawful, and third, that CBD did not fall within an FDCA exception for drugs or biological products marketed in food before any substantial clinical investigations involving the drug of biological products were instituted.

To assess Stanley’s impact on examination so far, we looked at refusal rates based on the FDCA and relating to applications that include Class 5, and those that explicitly call out any of hemp, CBD, cannabidiol, cannabis, or marijuana in their descriptions of goods. First, we looked at the trends in FDCA refusals over time. There were very few refusals in 2018. This jumped considerably in 2019 to around 2,000 refusals, as the trademark applications filed after passage of the Farm Bill in late 2018 began to be examined. The pace has only increased in 2020, where the Office is on pace to issue around 6,000 FDCA-based refusals.

We also examined the FDCA refusal rates within 2020, to see if the Office picked up the rate of refusals after the Stanley decision was issued. So far, there has been little impact — refusals are continuing at roughly the same, high rate that they were issued prior to the decision. The USPTO is applying the overall standards laid out in Section 907 of the TMEP, and the Stanley decision has simply ratified the USPTO’s course of action rather than changed the course .

Finally, we looked at Office Actions that directly cited to Stanley. Only seventy-seven Office Actions issued to applicants that include Class 5 goods cite directly to Stanley, as do thirty-five that do not involve Class 5 goods, with those numbers increasing in the last few weeks as the USPTO has seemingly added a sentence to its form database that references the case. It’s our expectation that the citation to Stanley will become a matter of course for the USPTO, especially in Class 5 refusals, and that the number of refusals on FDCA grounds will continue to at its current pace and will not rise further because of Stanley.

Booking.com and Its Impact

The Supreme Court recently decided that the mark Booking.com was not generic, had acquired secondary meaning, and was registrable on the Principal Register. This post assesses its potential impact by analyzing prosecution trends.

The Prior State of Generic or Descriptive TLD Marks

Using our trove of 12 million + Office Actions and Responses, we searched for applications that went abandoned since 2010 and faced a genericness and/or 2(e)(1) refusal. (The Office isn’t incredibly consistent in its phrasing for these refusals, so we looked at both to be safe.) 2,500 applications met these criteria; of them, 184 were on the Supplemental Register already. 1724 marks made it to registration, about equally split between the Principal and Supplement Registers. We are looking at a reasonably-sized pool of marks that could be impacted, but it’s hardly a huge number when spread out over a decade.

The Impact of Booking.com

Since the Supreme Court decision was released on June 30, 2020, there have been twenty-two Office Action responses citing to the Booking.com decision. So far, it’s been cited in applications for HempConsultants.com (in two filings) and Canna-Consultants.com (same applicant, also two filings), American Hemp Brokers Association, Family Dental Care, Remodeling.com, TechTerms, FileInfo, Cooler Screens, StorageBoxes.com, PartyTentsDirect.com, CheapShit.com, CarParts.com, SensoryFX, Bottlestore.com, Heavy Duty Bedding, L’Ange, The Green Amendment, Qpon, and E Lend. Examiners for the first two hemp-related apps above and for Heavy Duty Bedding also cited to the case in outgoing office actions; each outgoing Office Action so far has taken a pretty narrow read on the applicability of the Booking.com decision.

It’s interesting to see how immediately the case is being adopted (at least by applicants) for arguments outside of the immediate fact pattern of the case: very weak or generic term + a gTLD. It will be interesting to follow these citations to see if the USPTO responds. Will it take a narrow interpretation of the decision, limiting its impact to marks that contain gTLDs. Or, will examination outcomes move a more permission approach to registration of the least distinctive marks?

Minor updates – exports, applicant / correspondent searching, and more

We’ve been a little quiet with the blog posts lately — TM TKO is hard at work on several big content expansions! In the interim, we’ve made some small changes that should be useful to many of our users.

Knockout search export options

Knockout search exports now permit tagging and export of common-law results as an option.

Watch export additions

“Office Action” watch exports via CSV now include links to the Office Action.

Address-related Search and Export fields

We’ve added fields for more granular state and country searches of applicant and correspondent address information; this information is also included in CSV exports as a separate field.

International Registration number

This is included as a searchable field in search/watch, and included in CSV exports.

Trademark Research: Food and Restaurant Services

You client makes lasagna that it sells under the mark TONY’S PASTA, and their application gets a 2(d) citation to a prior registration for a TONY’S RONI for restaurant services. (The application is imaginary; the registration is real – Reg. No. 3502458). Let’s use TM TKO to do some research to help you find good arguments and evidence to support your Office Action Response, and secondarily marvel at how amazingly inconsistent examination outcomes from the USPTO can be. Onward!

Find Successful Arguments on These Facts

Let’s start by going to the Office Action search page, and searching for recent instances where applicants for food products in Class 29 overcame prior registrations in Class 43. We’ll limit the results to active, published applications where the prior registration is still active first — that will exclude some useful results, but also bypass any situations where the prior registration was “overcome” simply because it was cancelled or expired. It’s a complex-looking search, but conceptually pretty straightforward.

This search finds 336 Office Actions in Class 29 (that didn’t include Class 43) that overcame registrations in Class 43 (that didn’t include Class 29). We can limit even more by restricting it to just pasta – click New Search then Same Criteria, then add a rule to limit our results to just those that have pasta or lasagna in the description of goods.

Now we’re down to 42 results, like TUSCAN MARKET for pasta and retail stores overcoming a registration for TUSCAN KITCHEN for restaurant services and LIFE IS DELICIOUS. SIMPLY ENJOY overcoming a prior registration for LIFE IS DELICIOUS… TAKE A BITE for restaurant services, MARCELLA for pasta sauce overcoming a prior registration for MARCELLA’S for restaurant services, NEXT LEVEL MEALS for food overcoming a prior registration for NEXT LEVEL BURGER for restaurants, and more. Just click on the Citations button for details on the cited marks, and click on the magnifying glass to dive into the file histories. These are great resources to see how other attorneys overcame directly comparable refusals – how they used the case law, how they provided evidentiary support, how they chipped away at the Examining Attorneys’ evidence – so you can take do better work and maximize your own chances of success.

If you want to see the opposite fact pattern – applications for restaurant services overcoming prior registrations for foods – just use the “invert criteria” search. This finds sixty-plus examples, including AMY’S ICE CREAMS overcoming a variety of AMY’s marks, GRILL FRESH vs FRESH GRILL, TOPPERS vs VEGGIE TOPPERS, WAFFLEJACK vs HUNGRY JACK, BUFFBURGER vs BUFFBURGER, and more.

If you still needed more examples, you could remove the “Active” constraint — this will pull in more good examples, but also more instances where the cited mark was “overcome” only because the prior application went abandoned or the prior registration was cancelled or expired.

Find Evidence to Support the Argument

There are a few ways we might want to push back: providing some evidence that pasta and restaurant services aren’t closely related, and providing evidence that TONY is pretty diluted even as to restaurant services, and thus isn’t likely to cause confusion with food products.

A. Using ThorCheck® to Find Goods/Services Relationship Evidence

We’ll use ThorCheck to find evidence of identical or very similar marks, used for pasta or lasagna on the one hand and for restaurant services on the other. The evidence goes both ways. There are lots of examples of the same mark being registered for both, but there are also dozens examples of this sort of co-existence; even focusing on personal names, we have examples like GIULIA and RAO’S and BUDDY’s and BLAKE’S and AMY’S and lots of examples like PASTA MAMA’S vs MAMA’S PIZZA and ANTONIO’s vs
ANTONIO’S PIZZA. ThorCheck makes it simple to find these examples. It’s a matter of a single click to export a Word chart to add to your Office Action Response and one more to pull TSDR status and title copies into an evidence stack to attach to your response.

B. Find Evidence of the Dilution of TONY in the Restaurant Field

This sort of evidence is commonplace in the successful responses we just searched for moments ago. A manual search (or even a knockout search) is the way to go. Run the search, flag the fifty-three coexisting TONY registrations for some sort of restaurant-ish services in Class 43, export the chart to Word to integrate into your draft Office Action Response, and then hit the TSDR export button to get your evidence stack ready to go in one click.

How’s the Trademark Office Doing?

The case law requires that “something more” that a mere possibility of overlap in order to find a likelihood of confusion, e.g. that both the food product and the restaurant are similar types of food. See, e.g., In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999) (finding likely confusion between AZTECA MEXICAN RESTAURANT for restaurant services, and actually used for a Mexican restaurant, and AZTECA (with and without design) for Mexican food items).

How’s the trademark office doing in applying these standards? The “something more” language only makes it into about 1/5 of the outgoing Office Actions that have issued citations on similar facts. Where an Office Action is issued, the rate of overcoming it is far lower when the Examiner does use the “something more” language — from around 42% of applicants that get through to publication or registration for the refusals overall to just 26% that overcome the “something more” refusals. The Office is also, as ThorCheck finds, generating pretty inconsistent outcomes — sometimes an application will get refused, sometimes it will skate through and end up co-existing. The inconsistency is frustrating for applicants and their counsel, and rightfully so. I’m not sure what the solution would be, though; a per-se rule would make registration even more difficult.

Trademark deadwood, non-use claims, and “intent to commence use”

The US Patent & Trademark Office’s long-standing and often-restated goal of cutting down on the deadwood in the registry and the Federal Circuit and TTAB’s interpretation of the abandonment standard continue to be at odds. The TTAB recently issued a precedential decision in Wirecard AG v. Striatum Ventures BV, Cancellation No. 92069781 (TTAB Feb. 28, 2020), available at http://ttabvue.uspto.gov/ttabvue/ttabvue-92069781-CAN-21.pdf, a rare decision under the new expedited cancellation pilot program.

The case involved a registration for ZUPR (stylized) for software for checking products in stores, and related services. Reg. No. 4834250. The cancellation action was filed by a later applicant for the mark SUPR related to online shops, Ser. No. 88029940, against which it was cited as a bar to registration. The registration issued in October 2015, and the cancellation action was instituted in October 2018.

The Lanham Act provides helpfully defines abandonment, with the most relevant bits in italics. (Section (2) of the definition deals with abandonment via genericide; that doesn’t concern us.)

A mark shall be deemed to be “abandoned” if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

15 U.S.C. § 1127.

The facts were uncontested – the mark was not used in the US, and had never been. The parties disagreed about intent: the registrant presented internal PR / marketing strategy documents and evidence that it employed a US public relations firm.

For registrations issued under Section 66(a), the earliest date on which the three-year period for the statutory presumption of abandonment may begin in this case is the registration date. Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1931 (TTAB 2014). Since evidence of nonuse of a mark for three consecutive years constitutes a prima facie showing of abandonment and triggers a rebuttable presumption that a mark was abandoned without intent to resume use, Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998). The registrant only had a stub website and a YouTube video describing the “basic concepts” of their service, but nothing more; the rebuttable presumption was met here.

Where the presumption is met, the registrant must show evidence of: (1) use of the mark during or (2) the statutory period of nonuse; or (2) activities reflecting an intent to resume (or commence) use during the non-use period. Wirecard, p. 10.

The registrant nevertheless prevailed on the “intent to begin use” part of the analysis. The evidence that turned the tide and constituted the activities that “a reasonable business with a bona fide intent to use the mark in United State commerce would have undertaken,” id. p. 15:

  • a 2016 meeting at a Portuguese trade conference with a PR agency with “strong ties to the US market” about a market strategy for the US;
  • in 2017, signing a contract with that PR firm for the US market entry;
  • in later 2017, negotiating with an online marketing specialist that had done US work;
  • 2018 statements about an intent to launch in the US in 2019;
  • 2018 agreement with that online marketing specialist to use the ZUPR platform for an Italian clothing firm in the US once ZUPR launched in the US;
  • 2019 statement that the marketing specialist no longer represented the Italian brand, but wanted to have a US furniture retailer use ZUPR.

The TTAB did a fine job applying the relevant legal standings: the combination of some preparation to find US customers and ongoing technical development was consistent with an “intent” to generate use. However, the standard is and has always been exceedingly dumb — it places foreign registrants on wildly different footing than domestic registrants.

The domestic registrant had to make a use claim to get registration, so there is some market recognition out there to justify allowing the registrant’s cessation of use (remember, we’re talking about a three year time period — that’s a lot) when paired with an intent to resume use. A foreign registrant who has made any use in the US should be able to take advantage of the same, relatively lax, standard.

However, a foreign registrant who has never used the mark in the United States should not be able to take advantage of the statutory definition of abandonment, which is pinned to resumption of use. The Federal Circuit and Board have always assumed that a foreign registrant who has never started use should be treated as though the 44(e) registration is a substitute for US use, and dramatically change the “discontinued with intent not to resume” standard by adding the “(or commence)” parenthetical. As a result of this court-added amendment to the statutory definition of “abandonment,” the registrant with no presence amongst US consumers now gets the same benefits that a company whose mark was actually known in the US — and it’s this market recognition that should be the only reason to give an “abandoner” the benefit of the doubt in retaining their federal registration rights.

Just as bad, partial cancellation under this standard seems almost impossible. A US registrant who has continued to use some products but not others is typically vulnerable to a partial cancellation action; the foreign registrant who never used in the US seems almost immune to even partial cancellation under this “intended to use” standard.

The Federal Circuit and TTAB’s case law on abandonment is actively hindering the USPTO’s goal of cutting down on the amount of deadwood in the trademark registry, and an increasingly crowded registry continues to hinder applicant who get help up based on registrants who aren’t actually using their marks in US commerce.

How is the USPTO Keeping Up?

The US Patent & Trademark Office has been far ahead of most employers in encouraging remote working arrangements – employees with two years at the Office are generally allowed to work remotely, with periodic visits to DC to check in. It’s a great trade off, allowing employees to get the most out of a federal paycheck while steering clear of the expensive DC market.

So, has there been any immediate impact from the COVID-19 quarantines? Surprisingly, yes – the trademark examination branch’s pace of issuing Office Actions was basically identical in February and the first week of March. The second week of March, which just concluded, held up pretty well – the Office was right around the normal production for a week in either 2019 or 2020, pre-virus. Numbers were down a bit from the prior week, but within the normal variance range.

A bigger drop would have been entirely understandable – many of the USPTO’s remote employees work from home, and many USPTO employees have children. Those children are also at home, as schools and daycares and the like close, and that can make a big difference in productivity. We’ll need to see if the USPTO continues to keep up with its workload — or if there will there be a slowdown in new filings that impacts USPTO workloads in several months.

Slowing Trademark Numbers and COVID-19: a Serious Slowdown Coming?

Thanks in large part to the COVID-19 virus, the US economy is looking a lot shakier than it was just months ago. Economic slowdowns can cut down on new trademark filings from both existing businesses (which may be afraid to launch products into a slow market) and from new businesses (who aren’t launching at the same rate they would in a brisker economy).

We took a look at the two countries that have been hardest hit by the virus and have substantial numbers of US applicants – China and Italy (sorry, Iran, you don’t qualify) – to see what might be in the future for the US. The numbers aren’t encouraging.

The first full 5-day week of March in 2020 saw new filings drop by 9% over either 2019 or 2018. Applications from the two main countries with large-scale COVID-19 outbreaks, China and India, dropped especially hard. China’s filing numbers in 2020 were only 41% of their 2019 numbers; Italian filings were only 26% of their 2019 levels.

March (first week) 2020: 8,376 (387 from China; 13 from Italy)
March (first week) 2019: 9,128 (924 from China, 50 from Italy)
March (first week) 2018: 9,172 (677 from China; 70 from Italy)

February 2020 was also off, with new filing dropping by 6% overall from 2019, and about the same rate from 2018. Chinese filings were about half their Feb. 2019 levels and just over 1/3 of their 2018 levels; Italian-based applicants were at only 25% of their 2019 levels.

Feb. 2020: 33,068 (1,215 from China; 54 from Italy)
Feb. 2019: 36,092 (2,194 from China; 202 from Italy)
Feb. 2018: 36,593 (3,066 from China; 284 from Italy)

The foreign-filing drops cannot entirely be blamed on the coronavirus outbreak. The changes for unrepresented foreign applicants were intended to, and, as our prior research suggests, has reduced application numbers in Jan. 2020 and overall.

However, thes precipitous drops in February and the first week of March do, I think, reflect a serious and substantial slowdown in economic activity. If the US sees a similar societal impact from the virus – and it impacts US filings the way it seems to have impacted Chinese and Italian applications in the US – the US trademark filing scene could be hurting, and soon.

Are Post-Registration Audits Reducing Trademark Registry Deadwood?

Some conversation on the Oppendhal e-Trademarks listserv got us curious about the big-picture impact of the USPTO’s efforts to more aggressively audit post-registration use claims. The audit program kicked off in November 2017, and is described here. The program has been somewhat active, generating just over 12,000 Office Actions in roughly two years.

  • 2017: 798
  • 2018: 2,154
  • 2019: 5,926
  • 2020 (so far): 1,009

Audits of 1(a) registrations are slowly climbing, from 67% in 2017 to 75% in 2020; 44(e) and mixed 44(e) and 1(a) audits have remained a fairly constant 5% and 1.5% respectively, and 66(a) audits have actually dropped slightly from around 21% to around 15% of audits. Compared to overall numbers of registrations, though, registrations without 1(a) claims still get a lot more attention – both 44(e) registrations without 1(a) claims and 66(a) registrations are audited at a rate roughly twice their commonality in the registry since 2007.

Only about 550 registrations that received a post-registration audit are no longer active at all. A further 470-some registrations had audits and have fewer classes now than initially, but it’s far more complex than a blog post deserves to figure out exactly when during prosecution or post-registration each class dropped.

Since it’s hard to track whether individual goods or classes are dropped after an audit in a systematic manner, we did the next best thing and looked at a couple of random examples. Whatever the problems are with the methodology, the anecdotal research ended up being more fun anyway. The first two foreign-based registrations that I picked without a 1(a) registration basis were dramatically pared back, well beyond the audited goods or services; the two 1(a) registrations I happened to look at ended up providing additional specimens and their scope remained exactly the same. All the registrants were represented. I’m sure this stark divide would not continue over a larger sample size, and that some US-registrant-owned registrations are being sliced back quite a bit, too, but the dramatic nature of the difference really stuck out.

Example #1

MAYBANK (stylized). Reg: 4442149. Malayan Banking Berhad (Malaysian company). 44(e) registration. Class 16 and 36.

An Office Action audit requesting proof of use for “bond paper” and “plastic wrap” in Cl. 16 and “insurance claims processing” and “issuing travelers cheques” in Cl. 36. The audit prompted a response on far more than just the audited goods and services – the registrant filed a Response deleting huge swathes of goods and services, including the audited goods and more. Of the 223 words for which use was claimed in the Section 8 & 15 filing, 24 words remained after the audit process.

Paper, cardboard and goods made from these materials, not included in other classes, namely, bond paper, copier paper, graph paper, note paper, cardboard; brochures about financial services; catalogues in the field of financial services; leaflets about financial services; magazines in the field of financial services; packaging and wrapping paper of cardboard and paper; plastic wrap; plastic bags for packaging; pamphlets in the field of financial services; printed periodicals in the field of financial services; printed matters, namely, paper signs, books, manuals, curriculum, newsletters, informational cards and brochures in the field of financial services; paper articles, namely, written articles in the field of financial services; printed materials for advertising and promotional purposes, namely, printed advertising boards of paper and cardboard; paper banners; signs for advertising and display purposes, namely, printed advertising boards of paper and cardboard, paper display boxes, and display cards primarily composed of cardboard; stationery; forms, namely, blank forms, business forms, and order forms; writing pads; office requisites in the nature of pens; pencils, pens, and pencil holders in International Class 16; and
Banking; credit card services; financial evaluation, namely, financial evaluation for insurance purposes; exchanging money; financing services; investments, namely, investment brokerage, investment management, investment of funds of others; insurance, namely, insurance agency and brokerage, insurance administration, insurance claims processing; guarantees, namely, cheque guarantee card services, financial guarantee and surety services; cheque verification; issuing travelers cheques in International Class 36.

Example #2

SPANISH BREAKFAST (stylized). Reg. No. 4290593. 66(a) registration. Organización Interprofesional del Aceitede Oliva Español. Class 16, 29, 35.

Audit Office Action requesting samples of use for “postage stamps” and “pen nibs” in Class 16 and “rental of advertising space” and “services, namely, offering business management assistance in the establishment and operation of olive oil sales” in Class 35. Class 29 was not audited; the Section 8 & 15 filing already included a specimen for the sole product in that class, olive oil. The Office Action Response deleted all the audited goods and services, and quite a bit more. Of the 229 words in the ID for which a Section 8 & 15 were filed, only 59 words survived the audit process.

Books, publications, periodicals, magazines, catalogs, prospectuses, and printed matter all in the field of promoting the consumption of olive oil; newspapers; printed forms; calendars; printed tickets, posters, notebooks, note cards, envelopes and writing paper, letter trays, wrapping paper; printed matter, namely, brochures in the field of promoting the consumption of olive oil; bookbinding material; photographs, pictures, chromolithographs, paper labels; postage stamps; graphic art reproductions and representations; stationery; pen nibs, ball-point pens, pencils; adhesives for stationery or household purposes; instructional and teaching materials in the field of promoting the consumption of olive oil; plastic materials for packing, namely, plastic bags for packing; printing type; printing blocks in International Class 16

Wholesale and retail store services featuring olive oil; import and export agencies, advertising services, namely, promoting the goods and services of others; exclusive commercial and sales representation for all kinds of products, namely, promotional marketing and representation services for sale of olive oil; advertising services; dissemination of advertising matter and rental of advertising space; distributing prospectuses, directly or by mail order, and distribution of samples; business services, namely, commercial or industrial company operation or management assistance services; franchise services, namely, offering business management assistance in the establishment and operation of olive oil sales; advisor services and consultation in business management namely, business organization, business estimates, business reports and research in business matters, market studies, business information agency and import and export agencies in International Class 35

Example #3

DISNEY JUNIOR (stylized). Reg. No. 4094327. 1(a) registration. Class 41.

Audit Office Action requesting samples of use for “production, presentation, distribution of television programs” and “on-line entertainment services, namely, providing on-line computer games.” The Office Action Response provided several additional specimens for each. No services were deleted.

Example #4

ILLINOIS INDUSTRIAL TOOL. Reg. No. 3605472. 1(a) registration. Class 6, 7, 8, 9, 17, 22.

Audit Office Action requesting samples of use requesting use for a pair of goods in each class. The Office Action Response included a declaration from an executive and photos of each audited product; no goods were deleted.

The practical impact of Examination Guide 1-20 so far.

After quite a lot of complaints from the trademark bar, the USPTO issued revised Examination Guide 1-20 on Feb. 15, 2020 — the day it became effective. The updates primarily related to the email requirements for represented applicants, but the Exam Guide itself is much broader. This blog post breaks down the categories in the Exam Guide and, probably more helpfully, describes the first handful of Office Actions that point to the Exam Guide to get a feel for how the Office is actually going to use it.

E-Filing Requirements and Application Requirements

Between Sections I and IV of the Guide, e-filing is now generally mandatory. But, a handful of exceptions where paper submissions are acceptable. These requirements have generated zero Office Actions so far – we’ll have to wait for the first major TEAS implosion to see the practical impact.

Correspondence

Much ink has been spilled over the email address requirements, and we won’t belabor the point here – the Office has not yet issued any Office Actions addressing the email portion of the Guide.

Specimens

The Guide formalizes some existing trends, tightening up examination of certain types of specimens in use claims.

  • Requires labels or tags to be physically attached to the goods or to show “actual use in commerce” via informative information like UPC bar codes or lists of contents.
  • Requires more information about the URL submitted for web page specimens. The Office hasn’t quite caught up to the idea of non-static URLs, but oh well.
  • Emphasizes that mockups and digitally created illustrations and the like are inadquate.

All of the Office Actions issued so far that refer to Exam Guide 1-20 relate to specimen issues.

  • Class 7: 1 (OA: refused specimen as referring to sensor technology integrated into a pump rather than a pump)
  • Class 9/42: 1 (OA: web portion of specimen was missing URL/date)
  • Class 21: 1 (OA: web portion of specimen was missing URL/date)
  • Class 25: 3 (1: OA: specimen was tag or label unattached to the goods; 2: OA: specimen was tag or label unattached to the goods; 3: OA: specimen was tag or label unattached to the goods)
  • Class 10/41: 1 (OA: specimen in the service class did not include date)
  • Class 20/40: 2 (same mark for each; OA: specimen had screenshot of website but did not show mark on product, plus URL/date issue)

At least so far, it’s really just two problems cropping up: the lack of a date on website screenshots, and free-floating labels with no connection to the product. The label issue has always been dumb, and was exploited for years by unknowing or less scrupulous applicants. It’s a great fix.

The web-based specimen changes are a mixed bag. The URL requirement is along the right lines, in that it attempts to differentiate “live” sites from mock-ups. It could be better – it makes no attempt to differentiate between public and “gated” sites that are not publicly accessible, which would get at the “use” issue better, and makes no allowances for non-static URLs, which impacts the ability of Examiners to check on the claimed use. The date requirement is a bit more problematic – most browsers do not show date information on-screen, and many websites print to PDF very poorly, so adding a date requires some third-party software or extra steps.

We will continue to watch as the use of Exam Guide 1-20 evolves, and especially as the Office stats examining the email issue.

Filing Trends – Starting 2020 Right

The first week of January can be pretty slow for a lot of trademark practices, with the New Year holiday impacting productivity – albeit in a fun and good way. This post looks at the first week of the new year – Jan. 1 – Jan. 7, 2020. That’s a tiny slice of the year, but it’s still informative to see what happened in this small segment of time. Even in a “slow” week, almost 6,000 new trademark applications were filed. (There may be more in raw numbers if you read this in a few months, since Madrid-based applications and extensions of protection can take a while to propagate into the USPTO’s systems.)

This blog posts breaks down the data in several ways: the number of applications by country, by class, by applicant, and by filing counsel.

Applications by Country

The US (4,500 applications) and China (950) were far and away the two largest home countries of applicants, with Canada, Hong Kong, South Korea, and the UK all clearing the 50 application mark. Others with at least ten applications follow:

CountryApplications
USA4540
China951
Canada79
Hong Kong65
South Korea53
United Kingdom51
Israel25
Taiwan24
Germany19
Australia15
India15
Japan13
France10

Most Common Filing Classes

What are all these applications actually being filed for? We broke down the filing data for you. Multi-class applications are counted separately, and I have included the top multi-class application combinations to provide some additional detail on the top areas of overlap.

Int. Cl.Applications
25567
41466
9455
35389
28199
36197
3195
42195
5176
21156
16148

The most common multi-class pairings follow. Most of these are to be expected: software and hosted software; software and entertainment services; miscellaneous service overlaps, clothing and retail, merchandised goods, and food products.

Int. Cl. GroupingsApplications
9; 4257
9; 4135
35; 4228
35; 4122
25; 4119
35; 3618
16; 4115
25; 3515
9; 16; 4114
16; 2513
29; 3012

Busiest Applicants

The vast majority of applicants filed only a single application – there were 4,600 owners for those 6,000 applications. Only 250 filed more than three applications in the week; of these, a handful stood out for their filing volume. A couple of the largest applicants have large trademark portfolios, but most of the higher-volume applicants saw most of their total trademark filing activity in this week – not what we would have expected.

ApplicantApplications in PeriodTotal Applications
Adam $mith Laboratories, Inc.2432
CUBEAGE LIMITED2424
TALES IP, L.L.C.2245
International Fasteners, Inc.1627
XU BOXIN1417
Callisto Media Inc.1218
Exact Sciences Corporation1278
Miami Corporation12174
SG GAMING, INC.121787
Guangzhou Shiyuan Electronic Technology Company Limited1121
Samsung Electronics Co., Ltd.112822
BreathableBaby, LLC1055
Shanxi Huacai Zhongxing E-commerce Co., Ltd.1021

Busiest Filing Correspondents

We also ran the numbers on filing correspondents in the week. Those with ten or more applications in that week are included below. It’s a mix of busy practices – a number of large, multi-office and multi-practice firms, consumer-centric trademark shops, firms with strong ties to jurisdictions with high levels of filings into the US, and active smaller practices.

Correspondent FirmApplications
LAW OFFICE OF YI WAN119
LAW OFFICE OF TONY HOM67
LEGALFORCE RAPC WORLDWIDE, P.C.47
INTELLECTUAL PROPERTY CONSULTING, LLC46
DI LI LAW, P.C.44
NI, WANG & MASSAND, PLLC35
THE LICHY LAW FIRM, P.C.35
LEGALZOOM LEGAL SERVICES, LTD.34
GOLDMAN LAW GROUP33
KOH LAW FIRM, LLC.32
MUNCY, GEISSLER, OLDS & LOWE, P.C.32
BAYRAMOGLU LAW OFFICES LLC30
VALAUSKAS CORDER LLC24
IPSPEEDY CONSULTING COMPANY, LLC23
LOZA & LOZA, LLP23
FOX ROTHSCHILD LLP22
TALES IP, L.L.C.22
ARENT FOX LLP21
BARNES & THORNBURG LLP21
LAW OFFICE OF CURT HANDLEY17
FRIJOUF, RUST & PYLE, P.A.16
MICHAEL BEST & FRIEDRICH LLP16
K&L GATES LLP15
SHAN ZHU LAW GROUP, P. C.15
DLA PIPER LLP (US)14
SAUSSER SUMMERS, PC14
COBB COLE13
PRYOR CASHMAN LLP13
WINTHROP & WEINSTINE, P.A.13
HOVEY WILLIAMS LLP12
JPG LEGAL12
LADAS & PARRY LLP12
RIMON, P.C.12
SCIENTIFIC GAMES CORPORATION12
THE SLADKUS LAW GROUP12
WARNER BROS ENTERTAINMENT INC.12
BAKER & HOSTETLER LLP11
BROWN BROTHERS LAW LLP11
THE MCGHEE LAW FIRM11
LAW OFFICES OF BENJAMIN LASKI10
MERCHANT & GOULD P.C.10
ROTHSCHILD & ASSOCIATES LLC10
WEN IP LLC10

Thanks for taking a look at this filing data from the first week of 2020!

Results of the TM TKO 2020 Trademark Practice Economic Survey

For the past two weeks, TM TKO ran a survey about how trademark professionals are feeling about their practice in 2020. We’ll summarize the results in this blog post. Thanks to our users and to participants on Oppendhal Patent Law Firm’s e-trademarks listserv for their responses!

About TM TKO

A very quick word about us – TM TKO has been providing daily or subscription-based access to a variety of trademark research tools since 2015. Our customers include AmLaw 100 firms, trademark boutiques, solo practitioners, government agencies, in-house counsel, and more. We had our best year ever in 2019, and are looking forward to 2020.

We aim to help trademark lawyers with three main pillars of all successful trademark practices: solving everyday problems, solving hard problems, and growing practices.

Everyday problems: our clearance, search, and watch tools help you with your day-to-day practice needs. Hard problems: specialized research tools like trademark Examiner analytics, automated and manual Office Action research, and comparative research via ThorCheck® can help overcome difficult prosecution refusals. Growing your practice: we have an expanding set of marketing solutions to help grow your client base and generate more projects for existing clients.

Haven’t used TM TKO yet? It’s free to try for 30 days.

To the Results!

Trademark Practice – Size and Geography

50% of respondents practice in groups of 2 to 5 trademark lawyers; the rest were evenly split between solo practitioners and larger groups.

Almost half of respondents were from the east coast, with about 20% each from the west coast and southeast, and a smattering elsewhere. All but a couple of respondents were American lawyers. Of those, about 70% were in large cities, with the rest in small-to-medium size cities.

Expectations for 2020

People felt pretty good about their personal practices and about their firms’ trademark practices – just above 50% felt like their personal practice was improving and 40% felt their firm’s trademark practice was improving (respondents were high achievers, apparently). About 40% expected a similar year, and under 10% expected a worse year or couldn’t guess how the year would go.

US prosecution work was the main growth area for 66% of respondents, with smaller numbers seeing growth in international prosecution, non-litigation disputes, and prosecution. Litigation was a growth area for only 15% of respondents, and a slowing practice area for 20%.

Client relationships remain key – 63% of respondents generate most of their new work from existing clients; domestic referrals are a key for 45% of respondents and international referrals from foreign counsel for 28% of respondents. Respondents’ own business development efforts were only a significant factor for 25% of respondents.

The low level of direct business development efforts maybe isn’t a good thing, though; 45% of respondents listed client acquisition as their single biggest challenge for 2020. Staffing, price pressures and commoditization, technology, and practice costs all had over 20% of respondents worried. Two things generated lower levels of worry: clients paying (17%) and client retention (11%). Once clients are in the door, they tend to both pay their bills and stick around.

Technology

A lot of lawyers changed some of the technology tools that they use for practice in 2019, but seem less inclined to do so in 2020. Search, watch, research, prosecution research, and docketing tools all polled over 25% for 2019; only other research tools (over 50%) cracked the 20% mark for 2020. Respondents were generally enthused about technology improving their practice and its efficiency, although there several respondents comments on technology-adjacent concerns about filing mills and unauthorized practice of law rules.

The USPTO and Its Performance

The good feelings end here. 62% of respondents think the USPTO is doing a worse or much worse job in examination than in recent years, and only one respondent thought it was improving. 66% of respondents said that the USPTO has gotten better at nothing in the last several years; about 20% commended the USPTO on changes for website usability and 10% on improved TTAB decisions. The most common gripes: 40% took issue with examination on 2(d) issues, 30% on 2(e) issues, 45% with website usability, and 45% other prosecution issues. 17% felt there were no negative changes and 10% found that TTAB decisions were getting worse.

The “disastrous implementation” of the domicile and email rules was specifically called out by a number of respondents, as were specimen issues and the problems the USPTO is having keeping the registry clean of marginal use claims (and its spillover onto legitimate applicants).

Travel, Education, and Networking

75% of respondents usually attend the INTA Annual Meeting, by far the most of any meeting. 40% go to an unlisted event, with 20% or fewer going to the INTA Leadership Meeting, the AIPLA Annual Meeting, a state bar annual meeting, or the ABA IP Bar annual meeting.

This year, the travel to Singapore appears to be really hitting INTA attendance, at least among the North American lawyers who responded to this survey. Only 31% said they were attending this year (a 40% drop); anecdotally, people suggested that the costs and travel time commitments are the main reasons for this decision. TM TKO is in this group, too – we are allocating our time and conference budget elsewhere this year. One wonders if potential late-attendee numbers might drop as well, due to the outbreak of the coronavirus in the region. Other conferences had roughly similar numbers.

Conclusion

We hope your trademark practice has a great 2020, and if TM TKO can do anything to help make that a reality, don’t hesitate to contact us.

The Rise of IP Clinics

The USPTO runs a program to allow law school clinics to engage in practice before the Office. It provides law students great practice experience while they are still in law school, and is generally acclaimed as a great success. The Office most recently expanded the roster of IP clinics in 2016-2017, adding twenty law schools in mid-2008. The program also provides for expedited examination, so students can both file and handle and prosecution issues in a single academic semester or quarter.

The Office prepared a 2016 report on clinic activity from 2009-2016. Over those seven years, 2,000 trademark applications were filed by clinics as counsel, and 2,700 students were involved in clinics (both trademark and patent work). The

At TM TKO, we have been getting our set of law clinic users (it’s free for clinical / academic use!) ready for the semester, and the clinic program has been on our mind. So, we ran some updated numbers. These numbers are not going to match the USPTO’s figures from the clinics’ biannual reporting requirements. We do not have access to that data. Instead, our estimates based on the use of email addresses listed in the USPTO’s clinic list. Some clinics will use other emails for their USPTO communications, and our search methodology will not pull in those results. So, don’t get too hung up on specific numbers — this data only shows general trends.

The number of clinic-based filings per year have continued to rise, from the 400-500 range to over 650 last year. Much of that rise appears to be due to the expanded roster of active clinics. There is also a pretty wide range of trademarks being handled, from just a couple per year for some clinics to fifty or more for a couple of very ambitious (and busy) clinics. We don’t have student numbers for each clinic, so it’s impossible to say whether these are just more heavily attended or doing more filings per student.

IP Clinics are providing students valuable opportunities to understand the nuts and bolts of trademark practice and to build client relationship management skills. Both are crucial in running an active IP practice, and the USPTO’s clinical programs are giving today’s law students a great head start on practice that was not available ten years ago.

Participating Law Schools201920182017
American University, Washington College of Law954
Arizona State University Sandra Day O’Conner College of Law614642
Baylor Law School5128
Boston College Law School748
California Western School of Law171617
Fordham University School of Law340
Howard Universtity000
Indiana University Maurer School of Law212412
Indiana University McKinney School of Law001
Lewis & Clark Law School131714
Liberty University School of Law100
Lincoln Law School of San Jose000
New York Law School6100
North Carolina Central University School of Law1268
Northeastern University School of Law1034
Northwestern Pritzker School of Law312122
Roger Williams University School of Law201
Rutgers Law School323
Seattle University School of Law1228
South Texas College of Law Houston262923
Southern Methodist University Dedman School of Law15310
Southern University Law Center310
Suffolk University Law School21015
Syracuse University College of Law71013
Texas A&M University School of Law954
The George Washington University School of Law894
Thomas Jefferson School of Law71613
Tulane University Law School522
UIC John Marshall Law School81314
UNH Franklin Pierce School of Law201313
University of Akron School of Law000
University of Arizona, James E. Rogers College of Law21108
University of California, Irvine School of Law500
University of Connecticut School of Law171521
University of Detroit Mercy School of Law000
University of Idaho College of Law514
University of Maryland School of Law544025
University of Miami School of Law1972
University of Nebraska College of Law1978
University of North Carolina at Chapel Hill School of Law16105
University of Notre Dame Law School13136
University of Pennsylvania Law School2050
University of Puerto Rico School of Law001
University of Richmond School of Law192716
University of San Diego School of Law171516
University of San Francisco School of Law335626
University of St. Thomas School of Law28101
University of Tennesee College of Law141016
University of Washington School of Law6215
Vanderbilt Law School201412
Western New England University School of Law334
Total652528449